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Friday, 17 July 2015

It seems that these days the inclusion of well-known names
in new trade marks is quite common, or at least an attempt to do so in the
guise of creativity. This Kat has often pondered whether the mere use of a part of a
trade mark, or the inclusion of a mark in a new variant of a name, could
prevent the registration of a new mark. Nevertheless, he seems to have got his
answer in Case
T-621/14Infocit - Prestação de
Serviços, Comércio Geral e Indústria, Lda v OHIM and, although the matter
is by no means ‘hot news’ at this point, it still merits some discussion.

Infocit lodged an application for a Community trade mark for
the word “DINKOOL” in respect of several goods in classes 1, 2, 3, 6, 7, 12,
16, 20 and 21. The application was opposed by Deutsches
Institut für Normung eV, who owned the registered trade mark “DIN” (trade mark no. 0229048),
who opposed it under Articles 8(1)(b) and 8(4) of the Council Regulation 207/2009 on the Community trade mark. They also relied on an earlier
non-registered sign, “DIN”, used in Germany. No factual argument was put forth in relation to Article 8(4), and the claim subsequently failed before it had even been debated.

The General Court first assessed the claim under Article
8(1)(b) on a likelihood of confusion in the relevant territory between the
applied for mark and a prior existing mark. The Board of Appeal’s initial
findings on the relevant public were not challenged by Infocit, which was considered to be Germany. Infocit also did not contest the Board of Appeal’s decision on whether
the goods for which the mark was registered were identical, meaning the Court had to
finally assess whether the marks themselves were visually, conceptually or
phonetically similar.

Some marks just aren't 'kool' enough

As per the Board of Appeal’s decision, the General Court also
saw that the two marks were visually similar. The dissimilarities (horizontal
bars above and beneath the DIN mark) and the addition of the word “kool” do not
sufficiently distinguish the two marks, and the Court did note that as the
first part of the applied for mark is “DIN”, more importance has to be given to
it as the first part garners more importance from the relevant consumer. The
marks where therefore seen as visually similar, even with the slight deviations between them. As for phonetic similarity the General Court
further agreed with the Board of Appeal’s decision, and saw that, although the
marks differ in both length and in the amount of syllables they contain, the
difference in their phonetic character was only slight. There was therefore a
level of phonetic similarity.

The Court then turned to the conceptual similarity of the
marks. As “DINKOOL” is not a German word, the Court quickly determined it was a
fantasy word, and the relevant public would break it into its respective
components: “DIN” and “KOOL”. Although the German public would likely know the
meaning of the word “KOOL” as a misspelling of the English word “cool”, they would most likely not be
aware of the word “DIN” and its meaning in the English language. Through this dissection of the mark the relevant
public would likely associate the word “KOOL” with the business of the
intervener, should they perceive the word “DIN” to represent their business
initially and therefore connect the two even if present in a single mark. However, as the word is a fantasy word, no conceptual similarity
existed, as the relevant public would not perceive the mark, even with the
existence of “DIN”, to relate to the business of the intervener.

Finally, the General Court firmly established a likelihood
of confusion between the two marks, agreeing with the Board of Appeal, and
dismissed the appeal.

One has to observe that the decision largely hinged on the existence of the previous mark in its entirety in the applied for mark, which caused them to be very similar. Although this Kat by no means knows how prevalent the use of “DIN” is with the German populace in relation to Deutsches Institut für Normung, he does have to agree with the Court’s assessment in this case as to the marks’ similarity. The case goes to show that one has to be careful if using a registered trade mark as a whole in a new mark, even if one would imagine they are very different from each other.

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